UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ROKU, INC.,
`Petitioner
`
`v.
`
`UNIVERSAL ELECTRONICS, INC.,
`Patent Owner
`
`____________________
`Case IPR2019-01612
`Patent 7,589,642
`____________________
`
`DECLARATION OF DR. SAMUEL H. RUSS IN SUPPORT OF
`PETITIONER ROKU INC.’S REPLY TO PATENT OWNER’S RESPONSE
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`Roku EX1032
`Roku v. Universal Electronics
`IPR2019-01612
`
`

`

`Declaration of Dr. Samuel H. Russ
`U.S. Patent No. 7,589,642
`
`I.
`II.
`
`B.
`
`C.
`
`TABLE OF CONTENTS
`
`INTRODUCTION ....................................................................................... 1
`CLAIM CONSTRUCTION ......................................................................... 2
`A.
`“Key code signal” .............................................................................. 3
`B.
`“Key code generator device”.............................................................. 4
`C.
`“Generating a key code within a key code generator device using the
`keystroke indicator signal” ................................................................. 7
`III. THE GROUNDS PRESENTED IN MY PREVIOUS DECLARATION
`DISCLOSE ALL OF THE ELEMENTS OF THE CHALLENGED
`CLAIMS. ....................................................................................................11
`A. Ground 1: Mishra in View of Dubil ..................................................11
`1. Mishra Discloses the Claimed “Receiving” and “Generating.”
`................................................................................................11
`2. Mishra in View of Dubil Renders Obvious the Claimed
`“Modulating.” .........................................................................15
`3. Mishra in View of Dubil Renders Obvious the Dependent
`claims. ....................................................................................19
`Ground 2: Rye in View of Dubil .......................................................26
`1.
`Rye Discloses the Claimed “Receiving” and “Generating.” ....26
`2.
`Rye in View of Dubil Renders Obvious the Claimed
`“Modulating.” .........................................................................29
`Rye in view of Dubil Renders Obvious the Dependent Claims.
`................................................................................................30
`Ground 3: Caris in View of Skerlos ..................................................31
`1.
`Caris as Applied to Claim 2 Differs from Caris as Applied to
`Claim 1. ..................................................................................31
`Caris in View of Skerlos Renders Obvious the Claimed
`“Modulating.” .........................................................................33
`Caris in View of Skerlos Renders Obvious Independent Claim 1
`and the Dependent Claims. .....................................................35
`IV. THE PETITION HAS DEMONSTRATED A MOTIVATION TO
`COMBINE THE ASSERTED PRIOR ART REFERENCES. .....................36
`
`3.
`
`2.
`
`3.
`
`
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`- i -
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`

`

`B.
`
`Declaration of Dr. Samuel H. Russ
`U.S. Patent No. 7,589,642
`A. Ground 1 - A POSA Would Have Been Motivated to Combine Mishra
`and Dubil. .........................................................................................36
`Ground 2 - A POSA Would Have Been Motivated to Combine Rye
`and Dubil. .........................................................................................40
`Ground 3 - A POSA Would Have Been Motivated to Combine Caris
`and Skerlos. ......................................................................................42
`CONCLUSION ..........................................................................................43
`
`C.
`
`V.
`
`
`
`
`- ii -
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`

`

`Declaration of Dr. Samuel H. Russ
`U.S. Patent No. 7,589,642
`
`I.
`
`I, Dr. Samuel H. Russ, declare as follows:
`INTRODUCTION
`I am the same Dr. Samuel H. Russ who submitted a prior declaration
`1.
`
`(EX1003) in this matter, which I understand was filed on September 18, 2019. I
`
`have been retained on behalf of Roku, Inc. for the above-captioned inter partes
`
`review proceeding.
`
`2.
`
`I understand that the Patent Owner has submitted a response in this
`
`case. I also understand that the Patent Owner’s expert witness, Dr. Michael D.
`
`Sprenger, has submitted a declaration in support of the Patent Owner’s response. I
`
`have been asked to provide my technical review, analysis, and insight regarding
`
`both the Patent Owner’s response and Dr. Sprenger’s declaration in support
`
`thereof.
`
`3. My background and qualifications were provided in paragraphs 3-10
`
`of my previous declaration, and my CV was provided as EX1004. My statements
`
`in paragraphs 11 and 28-38 of my prior declaration regarding my review of U.S.
`
`Patent No. 7,589,642 (“’642 patent”) and related materials remain unchanged, as
`
`do my understandings of the relevant legal principles stated in paragraphs 12-27.
`
`4.
`
`Since my prior declaration, I have reviewed and considered the
`
`following additional materials:
`
`
`
`- 1 -
`
`

`

`Declaration of Dr. Samuel H. Russ
`U.S. Patent No. 7,589,642
`
`Paper Description
`7
`Decision Granting Institution
`16
`Patent Owner’s Response
`
`1034
`
`1035
`
`Exhibit Description
`Deposition Transcript of Michael D. Sprenger, taken September 15,
`1033
`2020 (IPR2019-01612).
`Deposition Transcript of Michael D. Sprenger, taken September 16,
`2020 (IPR2019-01613).
`Deposition Transcript of Michael D. Sprenger, taken September 16,
`2020 (IPR2019-01614).
`Declaration of Michael D. Sprenger in Support of Patent Owner’s
`Response to the Petition for Inter Partes Review of U.S. Patent No.
`7,589,642
`Prosecution History of U.S. Patent No. 9,355,553
`Declaration of Dr. Samuel H. Russ (IPR2019-01613)
`
`2003
`
`2007
`2011
`
`
`
`
`
`5.
`
`I have also considered all other materials cited herein. My work on
`
`this case is being billed at my normal hourly rate, with reimbursement for actual
`
`expenses. My compensation is not contingent upon the outcome of this inter partes
`
`review proceeding.
`
`6.
`
`In his declaration, Dr. Sprenger makes several statements regarding
`
`the ’642 patent, the prior art references, and the relevant technology at issue in this
`
`proceeding, which I believe to be inaccurate and misleading. My responses to these
`
`statements are detailed below.
`
`II. CLAIM CONSTRUCTION
`I first turn to the area of claim construction. In my opening
`7.
`
`declaration, submitted in support of the Petition for inter partes review directed to
`
`
`
`- 2 -
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`

`

`Declaration of Dr. Samuel H. Russ
`U.S. Patent No. 7,589,642
`the ’642 patent, I set forth my understanding of claim construction—namely that,
`
`during an inter partes review, claims are to be construed in light of the
`
`specification as would be read by a person of ordinary skill in the relevant art at the
`
`time the application was filed, and that claim terms are given their ordinary and
`
`customary meaning as would be understood by a person of ordinary skill in the
`
`relevant art in the context of the entire disclosure. I also acknowledged the claim
`
`constructions set forth in the Markman order submitted as EX1010. See EX1003,
`
`First Russ Decl., ¶¶19-25.
`
`8.
`
`Upon reviewing UEI’s Patent Owner Response (POR) and Dr.
`
`Sprenger’s declaration, UEI and Dr. Sprenger appear to add additional limitations
`
`to several of the claim elements. I believe, however, that both UEI and Dr.
`
`Sprenger propose claim constructions that violate certain well-established claim
`
`construction principles by improperly interpreting the scope of several claim
`
`limitations of the ’642 patent. I address these claim terms below.
`
`A.
`9.
`
`“Key code signal”
`Dr. Sprenger appears to agree with the Board’s construction of “a
`
`signal containing a modulated key code” but adds that “a signal containing a
`
`modulated key code” does not transmit an entire codeset. EX2003, Sprenger Decl.,
`
`¶¶128-31. I disagree with this additional limitation. A POSA reviewing this claim
`
`term would have understood it to plainly mean “a signal containing a modulated
`
`
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`- 3 -
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`

`

`Declaration of Dr. Samuel H. Russ
`U.S. Patent No. 7,589,642
`key code” as the District Court and as I previously discussed in my previous
`
`declaration. EX1003, ¶23. Because Dr. Sprenger’s construction improperly adds
`
`additional limitations that extend beyond the plain meaning of the term, the Board
`
`should not adopt UEI’s construction.
`
`B.
`10.
`
`“Key code generator device”
`I understand that the Board has requested additional clarification of
`
`the claim term “key code generator device” in view of the autoscan functionality
`
`described and claimed in U.S. Patent No. 8,004,389 in the related IPR2019-01613
`
`proceeding. DI, 15. I understand that the Board has asked for clarification of
`
`whether the District Court’s claim construction is inconsistent with the autoscan
`
`functionality claimed in the ’389 patent.
`
`11. While Dr. Sprenger does not comment on this claim construction, I
`
`understand that UEI has taken the position that there is no inconsistency between
`
`the District Court’s construction and the autoscan functionality claimed in the ’389
`
`patent. POR, 13-14. I agree that a POSA would not have read this construction to
`
`be inconsistent.
`
`12.
`
`I understand that the District Court’s construction indicates that the
`
`structure of the key code generator device generates a key code by “(1) identifying
`
`(or being informed of) a codeset usable to communicate with the electronic device
`
`and (2) identifying the key code corresponding to a pressed key for that codeset.”
`
`
`
`- 4 -
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`

`

`Declaration of Dr. Samuel H. Russ
`U.S. Patent No. 7,589,642
`EX1010, 29-30; DI, 12-15. This construction does not appear to be inconsistent
`
`with the claims of the ’642 patent and ’389 patent. In particular, claim 2 of the
`
`’389 patent may broadly perform the identifying of step (e) prior to the generation
`
`of the key code as well. For example, I understand that Dr. Sprenger also explained
`
`in his deposition that the claimed “key code generator device” as recited in claim 2
`
`of the ’389 patent may first identify a codeset using autoscan functionality.
`
`EX1034, 32:22-33:6. Subsequently, the key code generator device may and then
`
`identify that codeset and identify a corresponding key code in response to a pressed
`
`key:
`
`“Q: So Step (e) could be performed after Step (d), right? …
`
`[A:] Not necessarily. It does not specify when exactly this
`occurs. However, some of this information is needed in order
`for the system to be able to function properly. So Step (e)
`would have to occur at some point prior to carrying out all the
`lookup information and things like that, because without
`having a clear correlation or information of the consumer
`electronics device that is to be addressed, in my opinion, the
`Elements (a) through (d) would not make much sense.
`
`EX1034, 32:16-33:6.
`
`13. Based on this understanding, the autoscan functionality claimed in the
`
`’389 patent may occur prior to the two “identification” steps recited in the District
`
`Court’s construction (i.e., “(1) identifying (or being informed of) a codeset usable
`
`
`
`- 5 -
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`

`

`Declaration of Dr. Samuel H. Russ
`U.S. Patent No. 7,589,642
`to communicate with the electronic device and (2) identifying the key code
`
`corresponding to a pressed key for that codeset”).
`
`14. Subsequent to performing the autoscan, the key code generator device
`
`performs both of the identification steps in the District Court’s construction each
`
`time the user presses a key. I understand that this is also UEI’s position. POR, 14.
`
`To illustrate an example, assume that there are multiple different codesets and key
`
`codes associated with different remote control keys, e.g. a button for the “VCR
`
`power-on” operation of the Sony 8000 VCR, and a button for the “Channel Up”
`
`operation of the RCA Gold Television. EX1001, 3:18-21, 3:40-50, 6:9-16.
`
`Initially, the key code generator device uses autoscan to identify these codesets to
`
`be used in the future for controlling both devices. After the autoscan
`
`configuration, a user presses a button on the remote for operational use, which
`
`causes the key code generator device to identify the specific codeset and key code
`
`associated with the pressed button (e.g. the codeset for “Sony 8000 VCR” and the
`
`key code for “VCR power-on”). Id. When the key code generator device identifies
`
`a particular key code that corresponds to a target device, the key code generator
`
`device necessarily first identifies the codeset for the target device (provided that
`
`there are multiple codesets to choose from) because the codeset is the superset for
`
`the key code. For example, an STB may identify a binary control code received
`
`from a remote control and use that binary control code to identify a codeset and a
`
`
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`- 6 -
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`

`

`Declaration of Dr. Samuel H. Russ
`U.S. Patent No. 7,589,642
`key code from that codeset. UEI also appears to agree with this interpretation when
`
`stating that “[e]ventually, the key code generator device identifies the codeset that
`
`corresponds to the desired electronic consumer device and generates the key code
`
`for that codeset.” POR, 14 (emphasis added).
`
`15. Thus, I agree with UEI that the District Court’s construction is not
`
`inconsistent with the autoscan functionality. Further, as explained in my previous
`
`declaration, the grounds instituted by the Board render the claims obvious under
`
`the District Court’s construction.
`
`C.
`
`16.
`
`“Generating a key code within a key code generator device using
`the keystroke indicator signal”
`I understand that UEI and Dr. Sprenger propose construing this term
`
`to mean “its plain and ordinary meaning, except that it excludes receiving an
`
`appliance control code and merely translating or converting the code into another
`
`format, such as an infrared signal.” POR, 15; EX2003, ¶¶137-40. While UEI and
`
`Dr. Sprenger frame this claim construction as the “plain and ordinary meaning,”
`
`these additional limitations are not the plain and ordinary meaning. In particular,
`
`these exclusions improperly add more requirements beyond the plain and ordinary
`
`meaning of this term. The Board should therefore not adopt UEI’s overly narrow
`
`construction.
`
`17. To illustrate why this construction is improperly narrow, it is helpful
`
`to examine UEI and Dr. Sprenger’s own analysis of how the ’642 patent operates.
`
`
`
`- 7 -
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`

`

`Declaration of Dr. Samuel H. Russ
`U.S. Patent No. 7,589,642
`Based on the overview provided, both UEI and Dr. Sprenger demonstrate that
`
`excluding a translation or conversion of a received appliance control code would
`
`exclude the primary embodiments of the ’642 patent. See, e.g., POR, 5; EX2003,
`
`¶¶67-68, 155, 172. For example, both Dr. Sprenger and UEI rely on the figure
`
`below to illustrate the operation of the ’642 patent and claim 1. See, e.g., POR, 4-5;
`
`EX2003, ¶¶67-68, 155, 172.
`
`
`
`18.
`
`I understand that during his deposition, Dr. Sprenger provided an
`
`analysis of this figure as well as another figure to explain the operation of the first
`
`and second embodiments of the ’642 patent. EX2003, ¶¶68, 70. With reference to
`
`this first figure and the first embodiment of the ’642 patent, Dr. Sprenger explained
`
`that the ’642 patent’s STB receives a binary control code (i.e., “11111010”) and
`
`
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`- 8 -
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`

`

`Declaration of Dr. Samuel H. Russ
`U.S. Patent No. 7,589,642
`uses this binary control code to identify a key code from the depicted look-up
`
`table:
`
`[Q:] So for the remote control, when it transmits the keystroke
`indicator signal, that signal carries this binary code that you
`have depicted here; is that fair to say?
`
`A: Yeah, in a broad sense, we can see that it carries that, or it
`carries information that ultimately represents a binary code that
`helps the key code generator device identify which key has
`been pressed and also enables the key code generator device to
`identify the fact that a key just has been pressed.
`
`EX1033, 175:14-176:10.
`
`Q: To generate the key code, does [the STB] use this table that
`you've depicted here?
`
`A: … To your question, the key code generator device looks to
`this table or an equivalent one that it has stored and basically
`generates a new code that is destined for the target consumer
`electronics device.
`
`Q: And one way to implement this would be a lookup table; is
`that right?
`
`A: That’s one way to implement it. There may be others.
`
`EX1033, 177:16-178:18.
`
`
`
`- 9 -
`
`

`

`Declaration of Dr. Samuel H. Russ
`U.S. Patent No. 7,589,642
`A: So the key code generator device generates a new code. And
`one example is it performs a lookup operation.
`
`EX1033, 180:8-17.
`
`19.
`
`In view of Dr. Sprenger’s characterizations of the ’642 patent, the
`
`STB translates or converts the received binary control code into a key code for
`
`transmission by looking up the corresponding key code in a look-up table. Based
`
`on this understanding, the claimed “generating” must be broad enough to
`
`encompass this embodiment. See EX1033, 175:14-176:10, 177:16-178:18, 180:8-
`
`17. The construction proposed by Dr. Sprenger and UEI, however, contradicts this
`
`understanding. Specifically, the portion of the construction that “excludes
`
`receiving an appliance control code and merely translating or converting the code
`
`into another format” appears to exclude the binary control code depicted in Dr.
`
`Sprenger’s figure. Therefore, the Board should not apply UEI’s construction
`
`because it excludes a major embodiment of the ’642 patent.
`
`20. While a POSA would not have interpreted the “generating” claim
`
`term using Dr. Sprenger’s narrow construction, the instituted grounds still render
`
`obvious the challenged claims even under this construction as I further explain
`
`below in Sections III.A.1 and III.B.1.
`
`
`
`- 10 -
`
`

`

`Declaration of Dr. Samuel H. Russ
`U.S. Patent No. 7,589,642
`III. THE GROUNDS PRESENTED IN MY PREVIOUS DECLARATION
`DISCLOSE ALL OF THE ELEMENTS OF THE CHALLENGED
`CLAIMS.
`A. Ground 1: Mishra in View of Dubil
`1. Mishra Discloses the Claimed “Receiving” and
`“Generating.”
`21. UEI and Dr. Sprenger first appear to argue that Mishra’s remote
`
`control sends a command signal that “already includes the key code to control the
`
`appliance.” POR, 22; EX2003, ¶¶158-67. UEI therefore argues that Mishra does
`
`not disclose receiving a keystroke indicator signal, and therefore does not disclose
`
`the claimed generating of a key code, because Mishra is allegedly limited to the
`
`“translating or converting of a received control code.” POR, 22-25. Based on my
`
`review of the POR and Dr. Sprenger’s declaration, however, UEI and Dr. Sprenger
`
`mischaracterize and ignore Mishra’s operations and teachings that its remote
`
`control generates a keystroke indicator signal that does not include the claimed
`
`“key code.” See Pet., 22; EX1005, Mishra, ¶¶37-39. Mishra’s RCU does not
`
`transmit a keystroke indicator signal that already includes a key code, and Mishra
`
`explicitly discloses the identification of a key code that is returned to the RCU.
`
`EX1005, ¶¶37, 39.
`
`22. Mishra’s RCU generates a keystroke indicator signal (e.g.,
`
`corresponding to the “channel up button”) so that its “master [set top box]” can
`
`identify the corresponding key code. Id. Specifically, Mishra describes an
`
`
`
`- 11 -
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`

`Declaration of Dr. Samuel H. Russ
`U.S. Patent No. 7,589,642
`embodiment where a user controls a TV. Id. The user can press, for example, the
`
`channel up button which “causes the appropriate command [keystroke indicator
`
`signal] to be sent to the master [set top box] telling it, for example, that the user
`
`wishes to go to the next highest channel.” Id., ¶37. “The master in turn sends the
`
`RCU the necessary codes to increment the channel on the TV. The RCU then takes
`
`these codes and sends them … to the TV ….” Id. (emphasis added). In this
`
`embodiment, “the master feeds the information to the RCU each time the RCU
`
`needs information.” Id., ¶39. As seen from this description, Mishra’s RCU does not
`
`already transmit a key code in its keystroke indicator signal. Instead, Mishra’s
`
`RCU generates a keystroke indicator signal (e.g., corresponding to the “channel up
`
`button”) so that its “master [set top box]” can identify the corresponding key code.
`
`In this manner, Mishra’s STB identifies the corresponding key code in the relevant
`
`embodiment described in paragraphs 37 and 39. UEI ignores this embodiment and
`
`mischaracterizes Mishra’s operations.
`
`23. UEI further argues that Mishra does not teach “generating a key code
`
`within a key code generator device using the keystroke indicator signal.” POR, 24-
`
`25. Again, UEI mischaracterizes Mishra by arguing that Mishra is limited to the
`
`“translating or converting of a received control code.” Id., 24. As I previously
`
`explained, Mishra is not limited solely to this translation and instead explicitly
`
`
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`- 12 -
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`

`

`Declaration of Dr. Samuel H. Russ
`U.S. Patent No. 7,589,642
`recites the identification of a key code that is returned to the RCU. EX1005, ¶¶37,
`
`39.
`
`24. UEI also argues that Mishra describes transmitting “an entire codeset,
`
`not a single key code.” POR, 24. But UEI and Dr. Sprenger do not acknowledge
`
`that Mishra describes two distinct embodiments. See EX1005, ¶¶37-39. I
`
`understand that Dr. Sprenger corrected this misunderstanding during his deposition
`
`and acknowledged that Mishra discloses alternative embodiments:
`
`Q: Because Paragraph 38 is an alternative embodiment to
`Paragraph 37, right? …
`
`A: It’s not necessarily an alternative -- well, it says alternative,
`but it's like a second embodiment.
`
`Q: So how do you interpret the phrase alternative there at the
`beginning of Paragraph 38?
`
`A: We can see it as an alternative scenario or as a second
`embodiment.
`
`EX1033, 227:21-229:9.
`
`25.
`
`In this manner, Dr. Sprenger acknowledges that the relevant
`
`embodiment described in paragraph 37 of Mishra differs from the embodiment
`
`described in paragraph 38. Mishra explains that the “difference between the two
`
`approaches is that in the first case, the master feeds the information to the RCU
`
`each time the RCU needs information. In the second case, the master feeds the
`
`
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`- 13 -
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`

`Declaration of Dr. Samuel H. Russ
`U.S. Patent No. 7,589,642
`information needed to do all the different controls for a given device initially ….”
`
`EX1005, ¶39. In view of this description, Mishra is not limited to an embodiment
`
`that transmits an entire codeset. As Dr. Sprenger admits, Mishra describes an
`
`embodiment in paragraph 37 that differs from the one described in paragraph 38.
`
`26. Examining paragraph 37, Mishra describes an embodiment where its
`
`“master” identifies a key code each time an RCU button (e.g., “channel up button”)
`
`is pressed and transmits this identified key code to the RCU. See id., ¶¶37, 39; see
`
`also Pet., 23. UEI does not address this teaching and instead mischaracterizes
`
`Mishra by limiting Mishra to other embodiments, such as the one in paragraph 38.
`
`POR, 24. Further, Dr. Sprenger also confirmed that his analysis focused on these
`
`other embodiments, rather than the specific embodiment described in paragraph 37
`
`of Mishra. EX1033, 228:10-229:9. In this manner, UEI and Dr. Sprenger do not
`
`address the relevant portion of Mishra cited in the Petition and in my previous
`
`declaration.
`
`27. Considering the entirety of Mishra’s teachings, however, Mishra still
`
`discloses the claimed “generating” even under UEI’s narrow construction. While
`
`UEI generally cites to the terms “translating and converting,” this does not address
`
`Mishra’s teaching that its STB (1) stores a “variety of codes” and (2) identifies
`
`specific key codes in response to a user pressing a button on the RCU. EX1005,
`
`¶¶20, 37, 39. In view of this teaching, a POSA would have understood that Mishra
`
`
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`- 14 -
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`Declaration of Dr. Samuel H. Russ
`U.S. Patent No. 7,589,642
`discloses the claimed “generating” even under UEI’s narrow construction.
`
`Specifically, Mishra’s remote control transmits a keystroke indicator signal as I
`
`explained in my previous declaration. EX1003, ¶¶117-19. Focusing on the term
`
`“translating” is not relevant to this analysis and does not address Mishra’s
`
`teachings. Mishra plainly teaches the identification of a corresponding key code
`
`based on a received keystroke indicator signal just like the ’642 patent. EX1005,
`
`¶¶20, 37, 39. Thus, Mishra discloses the claimed “generating” even under UEI’s
`
`narrow construction.
`
`2. Mishra in View of Dubil Renders Obvious the Claimed
`“Modulating.”
`28. First, UEI argues that Mishra and Dubil do not teach the claimed
`
`“modulating” because Mishra allegedly transmits an entire codeset. POR, 25. As I
`
`previously explained in Section III.A.1, UEI mischaracterizes Mishra. Mishra
`
`describes a specific embodiment where its “master” identifies a key code each time
`
`an RCU button (e.g., “channel up button”) is pressed. See EX1005, ¶¶37, 39; see
`
`also Pet., 23.
`
`29. Second, UEI suggests an inherency argument even though the Petition
`
`and my previous declaration analyzes Mishra and Dubil under the obviousness
`
`standard. POR, 26; EX1003, ¶¶125-29. As I explained in my previous declaration
`
`and as Dr. Sprenger admits in his declaration, using modulation to wirelessly
`
`transmit a key code was a well-known and often used technique. See, e.g., Pet., 6-
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`Declaration of Dr. Samuel H. Russ
`U.S. Patent No. 7,589,642
`7, 24-25; EX2003, ¶¶49-54. Dr. Sprenger also confirmed this understanding during
`
`his deposition, stating that the “’642 patent did not invent the very concept of
`
`modulation. The modulation concept has been known prior to that in various forms
`
`of modulation. There are many ways to modulate signals.” EX1033, 54:10-55:3.
`
`30. Further, Dr. Sprenger also acknowledges in the Background section of
`
`his declaration that a POSA would have been motivated to use a modulation
`
`technique to avoid interference as well. EX2003, ¶¶50-51, 146-50. For example,
`
`Dr. Sprenger explains that:
`
`When deciding whether to modulate data for transmission, and
`if so, what type of modulation to use, engineers must consider
`the cost and complexity of each approach as compared to the
`requirements of the desired application. … Modulation
`increases the cost and complexity, but may end up ultimately
`being more effective due to the increased resiliency to signal
`interference. And modulation using an intermediate carrier
`frequency may increase the cost and complexity further, but
`may provide more signal reliability suitable for a particular
`application.
`
`EX2003, ¶51 (emphasis added).
`
`31. As seen from the explanation, Dr. Sprenger acknowledges that the
`
`benefits of modulation were well known. A POSA would have understood and
`
`recognized the benefits of modulation and would have found it obvious to
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`Declaration of Dr. Samuel H. Russ
`U.S. Patent No. 7,589,642
`implement modulation to transmit a key code. Dr. Sprenger further confirms that
`
`this was well-known before 2003 and the filing date of the ’642 patent:
`
`Q: But the benefits of modulation were well known before 2003
`as well, right?
`
`A: I think that's a fair statement.
`
`EX1033, 105:14-106:16.
`
`32.
`
` In both his declaration and deposition, Dr. Sprenger acknowledges
`
`that transmission of a key code via modulation onto a carrier signal was a well-
`
`known in the art and was an obvious design choice for an engineer. See EX2003,
`
`¶¶49-54; EX1033, 54:10-55:3. Dr. Sprenger acknowledges that “Engineering is
`
`often about dealing with tradeoffs and there is usually no right or wrong when it
`
`comes to the selection of certain technologies.” EX2003, ¶50. As Dr. Sprenger
`
`admits here, engineers would also have found it obvious to consider modulation as
`
`a design choice. Id., ¶¶50-51.
`
`33. While Dr. Sprenger suggests that “unmodulated” techniques exist for
`
`transmitting RF or IR signals, Dr. Sprenger admits that his sole example of an
`
`“unmodulated” technique is sometimes characterized as a “modulation” technique
`
`as well. See EX2003, ¶¶49-54; EX1033, 135:12-21. In view of Dr. Sprenger’s
`
`inconsistency, Dr. Sprenger contradicts himself. Even if “unmodulated”
`
`techniques existed, Dr. Sprenger’s statements do not refute the understanding that
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`Declaration of Dr. Samuel H. Russ
`U.S. Patent No. 7,589,642
`using a modulation technique was well known and obvious. What Dr. Sprenger
`
`has already admitted, however, is that modulation techniques were well known and
`
`commonly used by POSAs. EX2003, ¶¶50-51. An alleged distinction between
`
`modulated or unmodulated techniques still does not refute Dr. Sprenger’s
`
`admission that modulation techniques were obvious to use. Id. This is the same
`
`standard for obviousness that I applied to analyzing the combination of Mishra and
`
`Dubil in my previous declaration. EX1003, ¶¶125-29. Rather than addressing the
`
`obviousness positions presented in my previous declaration, the Petition, and Dr.
`
`Sprenger’s declaration, UEI instead mischaracterizes these positions and argues
`
`against inherency. POR, 26. Inherency, however, is not the correct standard as the
`
`Board has instituted all grounds based on obviousness. DI, 6-7, 35.
`
`34. Third, UEI mischaracterizes how Mishra and Dubil were combined in
`
`the Petition and my previous declaration. See POR, 26-27. Specifically, UEI refers
`
`to the XML tags described in Dubil, but the Petition and my declaration never rely
`
`on this structure in presenting the combination. See id.; Pet., 24-25; EX1003,
`
`¶¶125-29. Specifically, the XML teachings are not needed to support the
`
`obviousness positions explained in my previous declaration. EX1003, ¶¶125-29.
`
`As I previously explained, Mishra already describes the wireless transmission of
`
`key codes to its RCU using an IR or RF link. Id., ¶¶125-26; EX1005, ¶¶18, 20, 26,
`
`37. Dubil provides the implementation details for how this wireless transmission
`
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`Declaration of Dr. Samuel H. Russ
`U.S. Patent No. 7,589,642
`would occur. EX1003, ¶¶127-29. As I explained in my previous declaration, Dubil
`
`describes well-known parameters that a POSA would have used wireless transmit a
`
`key code. Id. For example, Dubil describes parameters used to modulate the key
`
`code onto a carrier signal. Id. UEI does not refute this teaching. Further, Dr.
`
`Sprenger has even admitted that modulating a key code onto a carrier signal was a
`
`well-known technique. See EX2003, ¶¶49-54, 146-50; EX1033, 54:10-55:3. In
`
`view of these admissions, even Dr. Sprenger acknowledges that a POSA would
`
`have used the modulation techniques and parameters described in Dubil to
`
`wirelessly transmit key codes. See EX2003, ¶¶49-54; EX1033, 117:21-118:7,
`
`119:9-18, 121:3-18, 123:8-19. In this manner, even though UEI mischaracterizes
`
`how the Petition combines Mishra and Dubil, the combination of Mishra and Dubil
`
`still renders obvious “modulating said key code onto a carrier signal, thereby
`
`generating a key code signal.”
`
`3. Mishra in View of Dubil Renders Obvious the Dependent
`claims.
`35. Claim 4 – UEI argues that Dubil does not teach a “key code [that]
`
`comprises a binary number and timing information.” POR, 28-29. Dubil, however,
`
`shows that it would have been obvious to package a binary number with timing
`
`information to represent a key code. See Pet., 27-29; EX1003, ¶¶135-39.
`
`Specifically, Dubil describes parameters including “carrier frequency, duty cycle,
`
`protocol type (FSK, biphase, PWM, etc.), repetition time, on/off times of the
`
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`Declaration of Dr. Samuel H. Russ
`U.S. Patent No. 7,589,642
`signal, [and] bit pattern of the command code ….” EX1006, Dubil, 2:61-3:8, 4:33-
`
`47, 4:60-5:5. Dubil explains that these parameters may be “data fields” of a data
`
`structure. Id. Based on this teaching, Dubil describes packaging a “binary number”
`
`with “timing information” as recited in the claims. A POSA would have found it
`
`obvious to generate a data structure or data package including a binary number and
`
`timing information. In view of these parameters, a POSA would have understood
`
`that Dubil renders obvious a “key code [that] comprises a binary number and
`
`timing information.”
`
`36. Dubil also describes the interplay between the binary number and
`
`timing information in the same way as the ’642 patent. For example, the ’642
`
`patent states that: “[t]he key code is modulated in step 103 using timing
`
`information associated